Law and practice snippets: April 2023
Read about a new UK IPO Practice Amendment Notice (PAN) on the classification of NFTs, changes to paying for paper forms and an update from Japan among our regular law and practice updates.
News of note
New PAN 2/23 – The classification of NFTs, virtual goods and services in the metaverse
The UK IPO have now published a PAN on “The classification of non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse”.
UK IPO – Changes to paying for paper forms
As of 12th April, the process for paying for a UK IPO paper form by debit or credit card has changed.
Users will now have to select whether they are paying the IPO for a patent, trade mark, design or other service, before then selecting the relevant form. This change has been introduced to help customers pay the correct fee for the form being filed.
Judicial Assistants Scheme – open to CITMA members
We have been made aware that the Court of Appeal Judicial Assistants Scheme is open but will likely soon close. We understand that the posts would be open to suitably qualified members with litigation rights.
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Working with the registries
Via the Law and Practice Committee, CITMA meets regularly with the UK IPO and other registries to discuss in detail points of practice and raise important feedback and questions submitted by members.
We have recently raised the following with the UK IPO:
Wish-list for UK IPO One IPO Transformation Project
The Law & Practice Committee regularly discuss the One IPO Transformation Project with the UK IPO.
A number of items have been suggested by the Committee and by members, which have been added to a wish-list for consideration.
This includes requests for better search functionality of the Register, the option to export search results in an Excel spreadsheet, better facilities for uploading and downloading large files (e.g. evidence and submissions), and the option to ‘save for later’ when completing a TM7A form.
UK IPO customer service standards
We provide regular feedback to the UK IPO on customer service issues raised by members.
The UK IPO have reported that unprecedented demand continues to impact timescales in some areas and that they are working hard to address any delays, including through recruitment and training of additional staff.
The latest UK IPO report on customer service standards during January and February 2023 was published on 22nd March 2023 and can be found here.
We meet with the UK IPO regularly. If you have any questions or feedback for the UK IPO relating to law and practice, including any items you would like to add to the ‘wish list’ for consideration as part of the digital transformation project, please email [email protected] marking it for the attention of the Law & Practice Committee.
Sharp practice
As reported in last month’s snippets, we are aware of misleading emails being received by applicants from IPR Protection and have notified the UK IPO accordingly.
Together we continue to monitor requests for payments and other examples of sharp practice. Please send any new examples to [email protected], preferably with the envelope as well as the letter, and with confirmation that your client is happy for it to be sent to the UK IPO.
International updates
EUIPO – 2023 edition of the examination guidelines enters info force
As of 31st March 2023, the latest edition of the examination guidelines for EU trade marks and registered Community designs entered into force.
Some of the most notable changes relate to information on the Office’s approach to classification of NFTs and virtual goods and services, as well as the definition of ‘well-known facts’.
EUIPO – Common practice on bad faith: CP13
The second and final consultation on CP13 on bad faith closes on 21 April 2023. The Law & Practice Committee has a representative on the EUIPO’s working group and has already provided feedback. As and when the CP is adopted, it is likely to lead to significant changes in practice on bad faith.
Japan – Suspension of fast track examination
Due to shortening of the examination period, the Japan Patent Office (“JPO”) has suspended the Fast Track Examination with effect from 1st April 2023. Applications filed on or before 31st March 2023, and which meet the requirement for Fast Track Examination, will still receive this service. Currently, the examination time period for applications ranges from three to eight months, depending on the class.
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Cases of note
Lidl v Tesco – [2023] EWHC 873 (Ch)
In the latest development in the case between Lidl and Tesco, the High Court has issued its decision on 19th April 2023. Mrs Justice Joanna Smith found in favour of Lidl in respect of its claims of trade mark infringement (insofar as its registration containing the word Lidl is concerned), as well as passing off and copyright infringement, and in favour of Tesco in respect of its counterclaim of bad faith in relation to Lidl’s registrations of a wordless mark.